Filing for Trademarks in a Pandemic? Turning Crisis Into Opportunity

The coronavirus pandemic has thrown normal life into complete disarray. Day to day living has brought significant adjustments in how people live, work, eat, learn, and shop. Business has come to a standstill… or so it seems. Even in the midst of chaos, companies in a variety of industries are still moving forward, and in some cases thriving.  Due to an expected shift in consumer habits, some of the products and services in demand now will likely continue to prevail after the pandemic has ended.  There is therefore immense value to consider trademark protection for any extended, new, or anticipated products or services.

Some Industries are Booming and Hiring

While many businesses have ceased to operate or have drastically reduced operations,a range of businesses in a variety of industries are experiencing an uptick or in some cases an explosion in demand. Some are even conducting mass hiring to keep up[1]. Industries that are currently experiencing an increase include pharmaceutical, healthcare, disaster management, software services (teleworking, e-learning platforms, online notarization, online entertainment, and online technical support services), state government, grocery, cleaning supplies, paper supplies[2], shipping, delivery and logistics. Amazon has shifted its focus to essential goods and has hired 80,000 workers to keep up with customer orders[3].

There has also been a surge in demand for various products: some of these have been expected and others are surprising. These include CBD and marijuana products[4], flour[5] (for what has been dubbed, “Coronavirus comfort baking”), vitamins, thermometers, pet supplies, video games[6], webcams[7], seeds[8], phone sanitizers[9], and even indoor gym equipment[10].

Some Businesses are Pivoting

Non-essential brick and mortar businesses have closed and whenever possible, are focusing on online retail sales. Some businesses have pivoted, and are using their existing manufacturing facilities to make alternative products, namely those that are in high-demand during the pandemic. In some of these cases, it is purely a charitable endeavor.  These include luxury clothing designers Louis Vuitton[11] (using perfume manufacturing facilities to make hand sanitizer) and Ralph Lauren[12] (making gowns and masks), furniture company Ikea[13] (making masks, sanitizer and aprons), car manufacturers Ford, GM and vacuum manufacturer Dyson (making ventilators)[14] ,[15]. Additionally, many distilleries are making hand sanitizer[16]. To further encourage pandemic-responsive manufacturing, New York State Governor Andrew Cuomo has offered financial incentives to businesses that shift their operations to in-demand products such as personal protective equipment[17].

Other businesses have adapted their current business model. Shake Shack and Guerilla Tacos are selling meal kits[18][19]. MAC makeup has a “virtual try-on platform” that allows consumers to try on makeup, which is customarily done in store[20]. Similarly, many service industries have also pivoted to provide services online. The New York Botanical Garden has converted its in-person classes online[21], many gyms and personal trainers are offering online classes[22] [23], as well as online music lessons[24]. Other interesting examples include a ticketed 3-day online music festival[25], with proceeds benefiting charity.   Even businesses that cannot pivot to new products and services during the shutdown may still be considering new goods and services they will offer when the markets reopen.

Moving Forward in Uncertain Times
Switching gears, pivoting and adapting measures can help companies move forward and stay engaged. Presently, it is unclear what the business landscape will look like once the coronavirus has been managed. As countries have shown, or are starting to show signs of recovery, the end is in sight. While businesses should evolve to meet the current need, a post-coronavirus future is hopefully not far away.

The USPTO Coronavirus Filings Landscape

A quick check of the most common terms in today’s pandemic lingo shows that there are currently 201 trademark applications pending in the USPTO[26]. These applications include the terms CORONAVIRUS, COVID, QUARANTINE, QUARAN[with a variety of suffixes], SOCIAL DISTANCING, or STAYATHOME. There are likely more, since there is a delay from when filed applications are made public in the USPTO database.

A review of the pandemic-themed trademark applications shows that they cover a range of goods and services such as apparel, newsletters, consulting services, medical technology, protective gear, entertainment services, restaurant services, software, wine, and online retail store services. With the mad dash to capitalize on the new normal, filing early can help ensure priority of rights in the USPTO.

It is impossible to determine the long-term effects that the pandemic will have on businesses. Some businesses may decide to permanently produce or provide pandemic-responsive or quarantine-themed goods and services (such as a distillery making alcohol, but that also decides to make and sell sanitizer or a gym providing in-person and online training). In that case, it is similarly advisable to promptly file trademark applications for products or services that are expected to become part of the company’s regular offerings.

Businesses are Still Filing for Trademarks

It is important to emphasize that coronavirus-themed trademark applications make up only a tiny portion of overall filings. Businesses in all industries are continuing to file for U.S. trademark protection. The United States Patent and Trademark Office (USPTO) database shows that over 37,000 trademark applications were filed in March 2020. Given the known timeline, trademarks are usually not examined for 3-4 months after filing, at which point the trademark Examiner may issue an Office Action. Office Actions responses are due 6 months after the action has been issued. This means that there is usually 9-10 months after filing until a submission is required if there is an Office Action. As a measured response to the pandemic, the USPTO is not rushing through its backlog, so this delay could potentially be longer. While it is hard to imagine now, by the time a response to an Office Action is due, the coronavirus pandemic should be a distant memory.

The cost of filing a trademark application is typically a fixed fee. The official government fee is $225-$275 per class. The lower per class fee is for goods and services that conform exactly to the USPTO Manual of Goods and Services. Additionally, until the first Office Action response is due, payment for additional classes beyond the first class can be delayed. Finally, even though use in U.S. commerce is required to ultimately secure the registration, it is not required in order to file.

Generally, it is recommended to order a full search report and analysis prior to filing. The full search report helps to determine if there is a likelihood of confusion with pre-existing uses, as well as a picture of the overall strength of the mark. Even so, a full search is not mandatory, and foregoing the search simply increases the risk of filing. A lower cost option is a knockout search, which only examines the USPTO database for identical marks.

Considering the overall low filing cost for a trademark application along with the significant delay until further action is required, trademarks are a good way to capitalize on the business climate of the pandemic, or to look to the future and it has been managed or defeated.




























[26] As of April 8, 2020.